Trademark Classes at the INPI: How to Choose Them Wisely

The creation of a company or the launch of a new product is inevitably accompanied by a crucial step: protecting your brand identity. In France, the Institut National de la Propriété Industrielle (INPI, the French National Institute of Industrial Property) is the sole body that centralises and validates these filings to grant you an operating monopoly. However, this monopoly is not unlimited: it is strictly restricted to the products and services you select during your filing, categorised according to an international classification system known as the Nice Classification. Choosing your trademark classes wisely is therefore a highly strategic decision that determines the scope of your legal protection and the viability of your commercial project against your competitors.

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The Legal Framework: The Nice Classification and the Principle of Specialty

To understand the importance of trademark classes, one must look at the substantive rules of French intellectual property law.

The Principle of Specialty of the Trademark

In French law, the protection of a trademark is governed by the principle of specialty (principe de spécialité). Contrary to popular belief, filing a trademark does not make you the owner of a name for absolutely all sectors of activity. According to this principle, your trademark is only protected for the products and services designated in the filing act.

This principle allows two companies to use the same name if their activities have no connection and there is no risk of confusion for the public. For example, the brand "Montblanc" coexists peacefully for luxury pens and for dessert creams, as consumers cannot confuse the two worlds.

The legal framework is set by the Code de la propriété intellectuelle (CPI, the French Intellectual Property Code). Article L. 711-2 of the CPI notably provides that a trademark must be distinctive and that its registration confers on its owner a property right over this trademark for the designated products and services.

What is the Nice Classification?

To harmonise filings at the international level, the Nice Agreement of 1957 established a common classification. It is composed of 45 classes:

• Classes 1 to 34 concern goods (raw materials, manufactured goods, food, etc.).
• Classes 35 to 45 concern services (consulting, transport, catering, software development, etc.).

Each class groups together thousands of terms (the "specification" or libellé). When filing with the INPI, you must precisely identify the classes that correspond to your current activity, but also to your medium-term development plans.

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Practical Guide: How to Choose Your Classes Step by Step

Choosing your trademark classes is not something to be improvised. Once the filing is validated by the INPI, it is legally impossible to add new classes or new products/services to your initial filing. If you forget a sector, you will have to make a completely new filing and pay the associated fees all over again. Here is the step-by-step method to secure your process.

Step 1: Map Out Your Current and Future Activity

Do not limit yourself to your immediate activity. Ask yourself the following questions:

• Which products or services will I invoice right from the launch?
• What communication materials or accessories will I sell (goodies, t-shirts, mobile applications)?
• Where will my business be in 3 to 5 years? (If you sell cosmetics today, do you plan to open beauty salons in the future?)

Step 2: Consult the INPI Database (the "Classification" Tool)

The INPI provides an online search tool based on the Nice Classification.

1. Go to the INPI search portal.

2. Enter keywords related to your activity (e.g., "clothing", "software", "training").

3. Note the class numbers that appear most frequently for your keywords.

Step 3: Draft the Specification with Precision

You have two options for drafting your list of products and services:

• Use terms pre-approved by the INPI (recommended): This speeds up the examination of your file and avoids technical objections from the examiner.
• Draft a custom specification: Useful if your activity is highly innovative and does not fit into standard categories. Be careful, however, to use clear and precise terms. Overly vague terms such as "all products in class 9" are systematically rejected.

Step 4: Conduct a Prior Art Search

Before validating your classes, you must ensure that your trademark is available in these specific sectors. A prior art search (recherche d'antériorités) using the INPI trademark database is essential to verify that no competitor has registered a similar name in the same classes or in similar classes (related activities).

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Deadlines, Fees and Key Figures of Trademark Filing

The cost of a trademark filing with the INPI depends directly on the number of classes selected. Since the implementation of the PACTE law and the reform of fees, the system operates on an "à la carte" basis.

Official INPI Fees (In Force)

• Cost for 1 class (electronic filing): 190 €
• Cost for each additional class: 40 € per class

Example: A filing comprising 3 classes will cost 190 € (first class) + 40 € (second class) + 40 € (third class) = 270 €.

Procedure Deadlines

• Opposition period: Following the publication of your filing in the Bulletin Officiel de la Propriété Industrielle (BOPI, the Official Gazette of Industrial Property), third parties have a period of 2 months to file an opposition if they believe your trademark infringes upon their prior rights.
• Final registration timeframe: If no objection from the INPI or opposition from third parties is raised, your trademark is registered within an average timeframe of 5 months from the filing date.
• Duration of protection: The trademark is protected for a period of 10 years, renewable indefinitely.

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Concrete Examples of Class Selection

To better understand the intellectual exercise of choosing classes, let us study two classic case studies.

Example 1: The Launch of an Eco-friendly Fashion Brand by Sophie

Sophie wants to launch "VerteAllure", an organic clothing brand sold online, and also wants to run a fashion advice blog.

If Sophie only chooses the clothing class, she forgets entire sections of her real economic activity. Here is the strategic selection for her project:

• Class 25: For clothing, footwear, and headwear (her main product).
• Class 35: For online retail (retail services for clothing products). Without this class, a competitor could set up a clothing retail website called "VerteAllure" without selling their own brand.
• Class 41: For the publication of her fashion advice blog and articles.

The financial cost for Sophie:

Sophie's filing includes 3 classes. She will therefore pay the INPI the sum of 270 € (190 € + 40 € + 40 €).

Example 2: The Development of a Meal Delivery Application by Thomas

Thomas is creating "VitePrêt", a mobile application that connects local restaurateurs and customers for home meal delivery.

Thomas must protect both the technological aspect and the final service:

• Class 9: For the downloadable mobile application and software.
• Class 39: For the transport and delivery service of meals.
• Class 43: For meal preparation and catering services (to cover the connection with restaurants).

The financial cost for Thomas:

Thomas's filing also includes 3 classes. The total amount of filing fees due to the INPI will be 270 €.

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Mistakes to Avoid When Choosing Your Classes

A poor filing strategy can prove costly, or even fatal, for the protection of your trademark. Here are the most common pitfalls:

• The "over-filing" trap (too many classes): Filing your trademark in 10 classes "just in case" is a bad idea. Beyond the financial cost (550 € for 10 classes), you expose yourself to an action for revocation due to non-use (action en déchéance). Under French law (Article L. 714-5 of the CPI), if you do not use your trademark for the targeted products and services for an uninterrupted period of 5 years, any interested third party can request the revocation of your rights in court for the unused classes.
• The "under-filing" trap (not enough classes): For the sake of saving money, limiting your filing to a single class when the activity actually touches upon three is a mistake. You leave the field open for your competitors to legally establish themselves in your related activities under the same name.
• Confusing the medium with the service: If you sell online training courses, your main activity falls under class 41 (education and training). Filing your trademark only in class 9 (digital media, USB keys, CD-ROMs) on the pretext that your training courses are recorded on digital media would be a serious classification error.
• Neglecting Class 35 for commerce: If you sell products from other brands (physical boutique or e-commerce), you must imperatively target class 35 (retail services). The class of the product itself does not protect the distribution activity.

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Frequently Asked Questions (FAQ)

Can I add classes to my trademark after validating my filing with the INPI?

No, this is strictly impossible. Once the filing form is validated and paid for online, the specification is frozen. If you wish to extend your protection to new classes, you must carry out a new trademark filing for those specific classes, which involves paying the basic fees again (starting from 190 €).

What is the risk of confusion between two trademarks?

The risk of confusion (risque de confusion) is the legal criterion used by courts and the INPI to determine if there is trademark infringement or a violation of a prior trademark. There is a risk of confusion if the public might believe that the goods or services in question come from the same company or from economically linked companies. This risk is assessed by combining the similarity of the names and the similarity of the products or services (the classes).

My activity is highly innovative and does not exist in the Nice Classification, what should I do?

The Nice Classification is updated regularly to adapt to new technologies (such as the recent appearance of NFTs or the metaverse). If your product is unique, you must use precise and neutral descriptive terms in your custom specification. The INPI will examine the wording and may suggest adjustments if it considers that the specification lacks clarity.

If I file my trademark in France, is it protected abroad?

No. Filing with the INPI only confers protection on French territory (the principle of territoriality). If you are targeting the European market, you must file a European Union Trade Mark (EUTM) with the EUIPO. If you are targeting countries outside the EU, you will need to go through the international registration system of the WIPO (World Intellectual Property Organisation) using your French filing as a base.

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Summary

• The principle of specialty limits the protection of your trademark solely to the products and services selected during the filing.
• The Nice Classification organises these products and services into 45 distinct classes (1 to 34 for goods, 35 to 45 for services).
• The basic cost is 190 € for one class, then 40 € per additional class.
• No addition of classes is possible after the validation of the filing; any omission requires a new, paid filing.
• A trademark unused for 5 years in a registered class can be challenged and revoked by a third party (revocation action).
• A prior strategic analysis of your present and future activities is essential to secure your investments.

Legal information for guidance only, not personalised legal advice. For your specific situation, ask your question free of charge on AvocatAI — answers based on French law, in your language.